The Supreme Court today heard oral arguments in the case of KSR International v. Teleflex. Already a group named the Coalition for Patent Fairness sent in a press release that it “welcomes” the Supreme Court review of the case of KSR International v. Teleflex. It states: “By choosing to hear this patent case, the highest court in the land is signaling its belief that there are serious imbalances in our nation’s patent litigation system. The many companies and industries that make up the Coalition for Patent Fairness agree. Inventors, consumers and businesses large and small will benefit from bright legal lines drawn by the court.”

The Coalition for Patent Fairness is a lobbying group backed by a number of high-tech companies in support of S. 3818, the Patent Reform Act of 2006, introduced by Senators Orrin Hatch (R-Utah) and Patrick Leahy (D-Vt.), to reform patent laws. Coalition members include Intel, Cisco Systems and Hewlett-Packard. The Coalition is concerned about the so-called patent trolls – companies that exist primarily to make money from patents through litigation instead of commercialization.

The tech companies want to put a damper on all the patents on all the patents on business methods, designs and undeveloped technologies that casues them to spend lots of money to defend. While Microsoft Corp., Cisco Systems Inc., Intel Corp. and other tech companies have filed amicus briefs calling for a change to the system, Johnson & Johnson, GE and DuPont, have filed their own briefs arguing that major changes to the patent system would jeopardize billions of dollars invested in product innovation. They want to protect pharmaceutical and chemical products from generic manufacturers and counterfeiters.

In the KSR case, KSR manufactures gas pedals that can be adjusted for the height of the driver and uses electronic signals rather than a mechanical cable to accelerate when the pedal is pushed. Both features were developed separately but Teleflex sued KSR claiming that KSR’s combination of the two features infringed on a patent it was issued in May 2001. KSR argues that the patent should be invalidated because the combination of the two features is obvious.

In KSR, the Federal Circuit held that the prior art did not render the claimed invention unpatentable because they had not proven, beyond genuine dispute and by clear and convincing evidence, that there was a suggestion or motivation to combine the teachings of the prior art in the particular manner claimed by the patent at issue (U.S. Patent No. 6,237,565).

The Supreme Court granted cert to answer the following question:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

Section 103 was first enacted in 1952; it provides that a patent cannot issue on subject matter that would have been “obvious” to a hypothetical “person having ordinary skill in the art” or PHOSITA. Four factual inquiries underlie an evaluation of obviousness: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the art; and (4) any other objective indicia of non-obviousness, such as commercial success of the claimed invention, long felt but unmet need.

KSR argues that under the Supreme Court’s interpretation of § 103, a combination of pre-existing elements does not constitute an “invention”, and does not meet the “condition for patentability” specified in § 103(a), if each element in the claimed combination does nothing more than what it was previously known or designed to do. They argue that the Federal Circuit’s interpretation of § 103 is wrong in holding that a combination of pre-existing elements will always constitute an “invention”, and will always meet the “condition for patentability” specified in § 103, unless there is proven “some ‘suggestion, teaching, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.” They argue that the “teaching-suggestion-motivation test” has no basis in the text of § 103 or in any decision of the Supreme Court.

Critics of the test argue that this has made it too difficult to prove that a claimed invention is obvious. This is of particular importance to pharmaceutical and biotechnology research-based companies who are against any change to the test (and might make it difficult to patent known drugs for new uses).

We will probably see some modification to the obviousness test but I don’t think the Court will swing wildly against the “teaching-suggestion-motivation” test.

Served Up Daily

Barista

Editor-in-Chief Barista Stephen Jenei is a patent attorney and Owner of Jenei LLC. When not serving up patent chat over a steaming cup of java, he's handling a diverse intellectual property practice in the biotechnology, pharmaceutical and chemical fields. More info @ Jenei LLC

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